5. What cannot be protected under trademark law?

There are five common situations in which there is no trademark protection. In any of these situations, the intended trademark cannot be registered and the owner has no right to stop others from using a similar name. Generally, when speaking of what cannot be protected under trademark law, we are referring to the standards established under the Lanham Act (the federal statute that provides for registration of marks and federal court remedies in case a mark is infringed).

• nonuse. Trademark rights are derived from the continued use of a mark in commerce. If there is a significant break in the chain of trademark usage, the owner may lose rights under a principal known as abandonment. Abandonment can occur in many ways, but the most common way is nonuse, that is, the mark is no longer used in commerce and there is sufficient evidence that the owner intends to discontinue use of the mark. For example, the owner of a mark for hotel services closed its hotels and failed to use the mark on similar services for a period of thirty years. This was sufficient proof that the owner abandoned the mark. Under the Lanham Act, a trademark is presumed to be abandoned after three years of nonuse. This presumption does not mean that the mark is automatically classified as abandoned after three years of nonuse. It means that the burden of proof shifts to the owner of the mark to prove it is not abandoned. The owner must prove an intention to resume commercial use.

• generics and genericide. A generic term describes an entire group or class of goods or services. For example, the terms “computer”, “eyeglasses” and “eBook” are all generic terms. The public associates these terms with a type of goods, not a specific brand. For example, there are many brands of computers—Gateway, Dell, and Compaq—but there is no brand of computer known simply as Computer. If protection were granted to generics, one company would have a monopoly and could stop all others from using the name of the goods. For example, if only one company could use the term “Jam,” any other company would be prevented from using that term with their brand of jam. Consumers are used to seeing a generic term used in conjunction with a trademark (for example, Avery labels, or Hewlett-Packard printers). From a grammatical point of view, generics are generally nouns, trademarks are generally adjectives and the generic term almost always follows the trademark. On some occasions a company invents a new word for a product (for example, Kleenex for a tissue). That term may function so successfully as a trademark that the public eventually comes to believe that it is the name of the goods, not the trademark. This is what happened with the term “cellophane.” This word, originally a registered trademark of the DuPont corporation, became so popular that consumers began to think of cellophane as the generic term for the clear plastic sheets. Other famous terms to move from trademark to generic are “aspirin,” “yo-yo,” “escalator,” “thermos” and “kerosene.” The process of moving from trademark to generic is referred to as genericide.

• confusingly similar marks. A mark will not be registered or otherwise protected under trademark law if it so resembles another mark currently registered or in use in the United States so as to cause confusion among consumers. This standard, known as “likelihood of confusion,” is a foundation of trademark law. Many factors are weighed when considering likelihood of confusion. These factors are derived from the case of In re: E.I. DuPont DeNemours & Co, 476 F.2d 1357 (CCPA 1973). However, the most important “confusion factors” are generally the similarity of the marks, similarity of the goods, degree of care exercised by the consumer when purchasing, the intent of the person using the similar mark, and any actual confusion that has occurred.

• weak marks. A weak (or descriptive) trademark will not be protected unless the owner can prove that consumers are aware of the mark. There are three types of weak marks: descriptive marks, geographic marks that describe a location and marks that are primarily surnames (last names). When an applicant attempts to register a weak mark, the PTO will permit the applicant to submit proof of distinctiveness or to move the application from the Principal Register to the Supplemental Register. If the applicant fails to prove distinctiveness (known as secondary meaning), the PTO will reject the application. If the applicant disagrees with the PTO decision, the applicant can appeal the decision to the federal district court.

• functional features. Trademark law, like copyright law, will not protect functional features. Trademark disputes about this issue (sometimes referred to as functionality) arise in cases involving product shapes or product packaging (sometimes referred to as trade dress). Unfortunately, there is no simple definition for “functional” because this area of law is still evolving. Generally, a functional feature is essential to the usability of a product. That is, the feature is necessary for the item to work. When the feature is not necessary for the item to work, it will be protected under trademark law. For example, the body of an electric guitar can be made in innumerable shapes (as witnessed by oddly-shaped guitars favored by musicians such as Bo Diddley, Kiss and ZZ Top). The design of these guitars may become a trademark because the design is not dictated by the ability of the guitar to function. The design may also be protectible as a design patent.

  Related terms: common use of mark; disclaimer of unregistrable material; free words or phrases; generic mark; registrable matter.